Two recent cases, not fashion related on their faces, carry implications for the fashion industry: First, a recent decision from the Ninth Circuit Court sheds light on the important duty that brands have when it comes to their trademarks. Meanwhile, the Supreme Court’s ruling in TC Heartland v. Kraft Foods stands to impact brands and retailers, such as Apple, Nike, Nordstrom, Bergdorf Goodman, Bloomingdale’s and Net-a-porter, that have faced off with trademark trolls.
Not All ‘Tevas’ are Created Equal
The Ninth Circuit Court of Appeals decided recently in Elliot v. Google that widespread use of the Google trademark as a verb — think: “I’m going to Google it” — does not mean that the mark is generic. Verb use alone does not automatically constitute generic use, according to the court, especially since such use often refers to the Google search engine and not just general use of any search engine.
The case highlights the danger of “genericide,” which is a real concern for holders of federal trademark registrations, fashion companies included. A registration may be canceled if the trademark becomes a generic name for a type of goods or service rather than an indicator of the source of such goods or service. Chanel has been active in its fight to prevent the “genericization” of its mark, taking out full-page ads in industry publications to inform editors, journalists, bloggers, etc., of its rights over the Chanel mark. The ad consistently includes the following language, “although our style is justly famous, a jacket is not ‘a Chanel jacket’ unless it is ours.” It is the trademark holder’s duty, after all, to police unauthorized uses of its mark and fight potential genericization.
Sandal-maker Teva comes to mind in terms of suffering from the widespread use of its name by others in a descriptive manner, as opposed to one of source-identification. The fashion press routinely refers to strappy activewear-inspired sandals as “Tevas” and “Teva-like” regardless of the brand of origin. Recently, Saks Fifth Avenue even labeled a pair of Prada sandals as “Prada Teva Strappy Grip-Tape Sandals,” seemingly to describe the style of the shoe — the retailer eventually changed the name to drop the “Teva.”
Fashion, Retail and Patent Trolls
While not as striking for the fashion industry as the Supreme Court’s hearing of the Varsity Brands v. Star Athletica cheerleading uniforms case, the TC Heartland v. Kraft Foods case, in which the U.S.’ highest court handed down a decision on Monday, has attracted a great deal of industry interest. Macy’s and L Brands Inc. (parent of Victoria’s Secret, Bath & Body Works and Henri Bendel), for instance, joined an array of other Internet companies and retailers in filing a friend of the court brief in the case. In doing so, they urged the Supreme Court to determine the proper place for patent infringement cases to be filed.
Kraft initially sued rival food manufacturer TC Heartland in 2014, arguing that Heartland’s water flavoring pouches infringed on its patents for similar products. While neither of the parties is a patent troll — a company that purchases groups of patents (oftentimes, invalid ones) largely without the intent to use such patents and instead, to target other businesses with lawsuits alleging patent infringement — the case nonetheless centered on patent trolls.
The Supreme Court was tasked with deciding the appropriate venue for patent infringement cases to be filed, given the tendency of patent trolls to file in a select few courts in the country, namely those where judges refuse to dismiss cases before trial. This makes litigation in those courts particularly expensive and, as a result, increases the pressure put on the defendant to settle the case, even if it is not necessarily in the wrong.
On Monday, the Supreme Court held that patent infringement cases can only be heard in a court either where the defendant is headquartered or where infringement of the patents has occurred and the defendant has a “regular and established place of business.”
This is potentially good news for brands and retailers — such as Apple, Nike, J. Crew, Victoria’s Secret, Nordstrom, Bergdorf Goodman, Bloomingdale’s and Net-a-porter — that have been faced with lawsuits filed by patent trolls. While there are potential loopholes related to the court’s new requirements for filing, which may enable patent trolls to continue trolling in courts of their choice, no shortage of corporations are cheering the ruling as a win in the fight against trolls.
Puma v. Forever 21 Case Trudges Forward
In an effort to fight off Puma’s claims of copyright, trade dress and design patent infringement in connection with footwear from Rihanna’s collection with the German activewear brand, Forever 21 filed a motion to have the case dismissed earlier this month. The retailer alleged that Puma failed to make its case. As of this week, the Los Angeles-based fast-fashion giant has filed yet another strongly worded opposition, this time speaking out against Puma’s request for a preliminary injunction, which would force Forever 21 to immediately cease sales of the allegedly infringing shoes.
In its filing, Forever 21 has blasted Kering-owned Puma for “attempting to stifle fair competition by claiming exclusive intellectual property rights in universal shoe styles.” According to the retailer, Puma has made “unmerited and “speculative and conclusory statements” in order to “shut down legitimate competition” between the two parties.
Judge Philip S. Gutierrez of the U.S. District Court for the Central District of California sided with Forever 21 last month when he refused to grant the Puma’s temporary restraining order, which would immediately bar Forever 21 from selling the allegedly infringing shoes. Gutierrez held that Puma did “not show that they are without fault in creating the crisis requiring ex-party relief.” In lieu of such immediate relief, the company was forced to wait and file a motion for a preliminary injunction, while Forever 21 continues to sell the allegedly infringing sandals and Creeper lookalike sneakers.
Julie Zerbo is the founder of The Fashion Law.